from the z dept

Zorro, the masked vigilante who wields justice in the form of a sword, was first brought to the world in 1919 by Johnston McCulley. As such, some portion of the Zorro existence is now in the public domain in many jurisdictions. That hasn't stopped Zorro Productions Inc. from claiming all kinds of intellectual property rights on all things Zorro, of course. A few years back, there was a lawsuit between Zorro Production and Mars over a depiction of the hero in a commercial for M&Ms. That was a trademark claim, the rights for which Zorro Productions claims for itself, and one of the interesting questions in the case was whether such a trademark claim could be made upon a character that had entered into the public domain. Put another way: can the expiration of copyright law on a fictional character be circumvented through a trademark claim. One of the keys to answering that question, as is discussed in the above post, is whether a specific use of the character would confuse the public as to the source of the original creation, or if it might be misconstrued as any kind of endorsement. Mickey Mouse, for instance, equals Disney. Does Zorro equal Zorro Productions? Of course not.

Late last month, the cancellation division of the office that manages community trademarks within the European Union issued a ruling declaring that a "Zorro" trademark was invalid in the categories of printed matter and entertainment. According to a just-released English version of the ruling, when the average consumer sees "Zorro," he or she will assume the story of the character is being told, but not recognize "Zorro" as an indicator of origin. As such, it's deemed to be merely descriptive and not sufficiently distinctive.

This was sparked after Zorro Productions had waged a legal war with Robert Cabell, who created a theatrical production entitled Z - The Musical of Zorro. Cabell had responded to the attack by trying to get the EU to acknowledge that the character was in the public domain from a copyright perspective and that the trademarks held by Zorro Productions had been registered fraudulently. The EU concurred.

"If a title in question is famous enough to be truly well known to the relevant public where the mark can be perceived in the context of the goods/services as primarily signifying a famous story or book title, a mark may be perceived as non-distinctive," states the decision. "A finding of non-distinctiveness in this regard will be more likely where it can be shown that a large number of published version of the story have appeared and/or where there have been numerous television, theatre and film adaptations reaching a wide audience."

Zorro, which has resulted in 38 films, fits this description, says the Office for Harmonization, which adds that "although it is possible for titles of books or names of fictional characters to function as indicators of trade origin, it is dependent on the particular goods and services which they are applied for."

And so Zorro has been freed from the EU prison of intellectual property, at least in these respects. And, more importantly, this is a good thing. I have no idea of the quality of Cabell's musical about the masked vigilante, but I damn well know that a character created a century ago, whose author is long-dead, ought not be denied in the use of the public in the aims of creating more art simply because a corporate interest wants to sell non-existent rights to Hollywood.

from the let-the-debate-begin dept

You may have seen the news that Zorro Productions is suing Mars, the makers of M&M's, over a trademark infringement claim, concerning an M&Ms commercial that apparently involves some sort of Zorro costume. But wait a second... just like Sherlock Holmes, it appears that at least some of Zorro should be in the public domain by now. Pamela Chestek writes in to give her very thorough analysis of this particular case, noting that, in some ways, it may be setting up some future lawsuits concerning the difference between trademark and copyright in characters. This is an issue that is going to get increasingly important -- since (assuming Disney doesn't pull another copyright extension out of its magic bag) some characters created in the last century may start hitting the public domain with their copyrights, even as their trademarks remain. But what does that mean when it comes to using those characters? Well, with Sherlock Holmes, it means that the estate holding the rights still pretends you can't do anything, even if that's not quite true. And it looks like Zorro Productions is doing the same thing. But it's not that easy:

According to the Copyright Office, all works published before January 1, 1923 are in the public domain. So if the copyright in the original Zorro character is in the public domain, the public may also exploit the character. But how far does the right extend? As a matter of legal doctrine, in general copyright and trademark can happily co-exist. Therefore, even if Zorro was in the public domain, to the extent that Zorro has source-identifying significance (like Mickey Mouse does), Mars may use Zorro only as long as doing so isn't likely to cause confusion as to the affiliation, connection, or association of Zorro with Mars, and Mars doesn't suggest that Zorro sponsors or approves of Mars' goods. (That's an abridged version of the statutory language, don't blame me because it's almost unintelligible).

We can't know whether this might be happening without knowing what the accused work is, but the complaint may be squarely in doctrinal conflict territory. There is no suggestion that Mars used the word "Zorro"; it instead appears that ZPI is alleging that use of a Zorro character in any form is infringing. ZPI describes its proprietary character as dressed in black, wearing a flat Cordoba hat, a mask and a cape, and you can see that the registered logos of Zorro and the Zorro costume are both quite similar to the public domain Zorro.... So to the extent that the claim of proprietary rights in the Zorro character is co-extensive with the copyright in the character, which gives?

In the end, Chestek gives the edge to Mars, but isn't entirely sure because it's not entirely clear what the actual infringement is. Many of the news stories show an image of an M&M candy in a sorta-Zorro-like outfit, but Chestek notes that the lawsuit describes someone in a Halloween costume, which implies it may be something different. Assuming that it is a person in a Halloween costume, Chestek suggests that Mars has a strong case, and Zorro may be missing the mark:

My vote right now is that the mere use of a character in the public domain, particularly when it appears to be someone simply wearing a Halloween costume representing the character, isn't going to be perceived as an endorsement in the first instance.

However, that could change, depending on the specific use, and if there is some impression of "endorsement." Ah, the public domain. It isn't quite what it used to be.